Laboratory Corporation of America Holdings v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2102001931825
Complainant is Laboratory Corporation of America Holdings (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pixcellabcorp.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2021; the Forum received payment on February 11, 2021.
On February 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pixcellabcorp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pixcellabcorp.com. Also on February 16, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the LABCORP trademark and other trademarks incorporating the LABCORP mark established through its ownership of its trademark and service mark registrations described below and the goodwill that it has built through its extensive use of its marks in its diagnostics and medical laboratory services. Complainant submits that it has built its enterprise to have an annual revenue of $11.5 billion in 2019, with nearly 65,000 employees worldwide, and hundreds of thousands of customers involving at least 160 million patient encounters.
Complainant submits that the disputed domain name <pixcellabcorp.com> is confusingly similar to its LABCORP and PIXEL BY LABCORP marks as it includes the LABCORP mark in its entirety as well as the dominant portion of the PIXCEL BY LABCORP mark, with only the minor addition of a letter “c” which does not change the likelihood of confusion.
Complainant submits that such a minor alteration of one letter does not change the overall impression created by the disputed domain name and alleges that the disputed domain name registration is an example of typosquatting. Citing Laboratory Corporation of America Holdings v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA2003001889198 (Forum Apr. 17, 2020) (stating “misspellings such as addition of a letter does not distinguish the Domain Name from the Complainant's trade mark” and finding the <labcorrp.com> domain name confusingly similar to the LABCORP mark).
Complainant adds that the inclusion of the gTLD “.com” in the disputed domain name does not change the conclusion that the disputed domain name is confusingly similar to Complainant’s Mark. Citing Snap Inc. v. Nestor Hernandez, F1709001749325 (Forum Oct. 25, 2017) (“gTLDs are insufficient to defeat a test of confusingly similar”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name alleging that Respondent has no right to own or use any domain name incorporating Complainant’s LABCORP mark, because Respondent is not commonly known by the disputed domain name, but instead refers to herself as “Carolina Rodrigues.”
Nothing in the Whois information suggests Respondent is commonly known by the disputed domain name. Citing AutoZone Parts, Inc. v. Bin G Glu / G Design, FA1812001822466 (Forum Jan. 27, 2019) (“WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name”).
Complainant also asserts that there is no relationship between Complainant and Respondent and Complainant has not granted Respondent permission to use its marks.
Complainant refers to screenshots of the web locations to which the disputed domain name has resolved which are exhibited in an annex to the Complainant.
Complainant submits that the first of these shows that Respondent is using the website to redirect visitors to landing pages that are part of a malware distribution scheme. This activity is not a legitimate non-commercial purpose or bona fide offering of goods or services. Citing Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).
The second screenshot shows that at other times the disputed domain name resolves to a parked website on which the disputed domain name is offered for sale.
Complainant alleges that offering the confusingly similar, disputed domain name for sale shows Respondent’s lack of legitimate interest and argues that such use shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Complainant submits that the disputed domain name was registered and is being used in bad faith alleging that Respondent has intentionally attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s LABCORP marks as to the source, affiliation, or endorsement of Respondent’s website.
Complainant argues that Respondent is using the disputed domain name as a website address to leverage the notoriety of the LABCORP marks to attract Internet users and monetize the web traffic. Complainant submits that such use of the disputed domain name for profit is an act of bad faith. Citing Hilton Group plc v. Forum LLC, D2005-0244 (WIPO April 22, 2005) (use of domain name to attract users for commercial gain is evidence of bad faith).
Complainant submits that upon seeing the LABCORP marks in the disputed domain name, consumers will initially be confused as to the site’s association with or sponsorship by Complainant. Complainant alleges that such initial confusion is enough to demonstrate bad faith. Citing David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472 (“A substantial proportion of Internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant’s objective of bringing them there will already have been achieved.”).
Furthermore, Complainant contends that the passive use of the disputed domain name to resolve to a parked website is also sufficient to establish Respondent’s bad faith. Citing PrimeSense Ltd. v. rui zhu aka zhurui, Case No. D2011-1200 (WIPO Sept. 12, 2011) (explaining that “bad faith registration and use may exist in the form of passive holding or opportunistic bad faith”).
Complainant adds that Respondent’s use of the disputed domain name to lure Internet users who are looking for services offered by Complainant and misdirect them to landing pages that are part of a malware distribution scheme disrupts Complainant’s business and also constitutes bad faith under Policy ¶ 4(b)(iii). Citing Google LLC v. Raj Bansal, FA1912001875857 (Forum Jan. 16, 2020) (finding bad faith under Policy ¶ 4(a)(iii) where the <googlewifilogin.com> domain name was used in an attempt to distribute malware).
Complainant again refers to the screenshots of the websites to which the disputed domain name has resolved which illustrate that Respondent is currently offering the disputed domain name for sale at an amount that is likely far greater than Respondent’s out-of-pocket costs. Complainant argues that Respondent is therefore leveraging the LABCORP mark for its own profit in bad faith. Citing Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA150600162533 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
In conclusion, Complainant alleges that it has identified hundreds of decisions under the Policy against Respondent, including over 100 Forum decisions. Complainant lists these decisions in an annex to the Complaint, which include for example Laboratory Corporation of America Holdings v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2009001912624 (Forum Oct. 19, 2020) (noting Respondent’s “history of bad faith domain name registrations and adverse determinations”). Complainant submits that the listed decisions demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, operating under the name “LABCORP”, provides clinical laboratory, services and health care diagnostics and is the owner of the following trademark and service mark registrations in the United States:
· United States registered service mark LABCORP, registration number 2,000,799, registered on the Principal Register on September 17, 1996 for services in international classes 35 and 42;
· United States registered service mark LABCORP (Design), registration number 2,249, 939, registered on the Principal Register on June 1, 1999 for services in international classes 35 and 42;
· United States registered service mark LABCORP BEACON, registration number 4,053, 848, registered on the Principal Register on November 8, 2011 for services in international class 35;
· United States registered service mark LABCORP MEDWATCH, registration number 4,116,076, registered on the Principal Register on March 20, 2012 for services in international class 44,
· United States registered service mark LABCORP TOUCH, registration number 4,195,514, registered on the Principal Register on August 21, 2012 for services in international class 44,
· United States registered service mark PIXEL BY LABCORP, registration number 6,059, 163, registered on the Principal Register on May 19, 2020 for services in international class 44;
· United States registered service mark PIXEL BY LABCORP (Design), registration number 6,072, 492, registered on the Principal Register on May 19, 2020 for services in international class 44;
· United States registered trademark PIXEL BY LABCORP, registration number 6, 205,815, registered on the Principal Register on November 24, 2020 for goods in international class 10;
The disputed domain name was registered on November 23, 2020 and resolves to a parked website with linked advertisements, some of which promote products and services of competitors of Complainant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
The registrant had availed of a privacy service to conceal her identity on the published WhoIs. The Registrar confirmed that Respondent is the owner of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear, convincing and uncontested evidence that it has rights in the LABCORP trademark and other trademarks incorporating the LABCORP mark including PIXEL BY LABCORP, established through its trademark and service mark registrations described below and at common law by the goodwill that it has built through its extensive use of the mark in its diagnostics and medical laboratory services in a substantial international business with annual revenue of $11.5 billion in 2019, nearly 65,000 employees worldwide, and hundreds of thousands of customers involving at least 160 million patient encounters.
The disputed domain name consist of the elements “pixcel”, “lab”, “corp” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s LABCORP mark is clearly identifiable in the disputed domain name are the elements of Complainant’s PIXEL BY LABCORP mark, with only the minor addition of a letter “c”.
The positioning of the letter “c” immediately after the letter “x” means that the element “pixcel” in the disputed domain name would be pronounced identically to the element “PIXEL” in Complainant’s PIXEL BY LABCORP mark. The letter “c” is also likely to be overlooked by a reader.
In the context of this Complainant the gTLD <.com> extension may be ignored for the purposes of comparison as it would be perceived by Internet users as a necessary technical element of a domain name.
This Panel finds that the disputed domain name is confusingly similar to both the LABCORP and PIXEL BY LABCORP marks in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting that
· Respondent has no right to own or use any domain name incorporating Complainant’s LABCORP mark, because Respondent is not commonly known by the disputed domain name, but instead refers to herself as “Carolina Rodrigues.”;
· nothing in Respondent’s WhoIs information suggests Respondent is commonly known by the disputed domain name;
· there is no relationship between Complainant and Respondent;
· Complainant has not granted Respondent permission to use its marks;
· Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name;
· the screenshots exhibited in an annex to the Complaint show that Respondent has used the disputed domain name as the address of a website that redirects visitors to landing pages that are part of a malware distribution scheme;
· at other times the disputed domain name resolves to a parked website offering the domain name for sale.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, the burden of production shifts to the respondent to prove that she has such rights or interests. Respondent has failed to discharge the burden of production. This Panel must therefore find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It must be more than a coincidence that the registrant chose to register the disputed domain name, that is composed of Complainant’s LABCORP trademark in combination with the word “pixcel”, which in turn is almost identical to Complainant’s PIXEL BY LABCORP mark.
This Panel finds that on the balance of probabilities, the disputed domain name was chosen and registered with Complainant’s mark in mind. This Panel also finds that the disputed domain name was registered in bad faith in order to take predatory advantage of Complainant’s name and the reputation and goodwill in the LABCORP and PIXEL BY LABCORP marks.
The screenshot of the website to which the disputed domain name resolves shows the following statement “By clicking the button below you'll go through a standard security check, after which you will be redirected to Chrome store and will be given the option to install Secured Search extension. This extension will offer you a safer web search experience by changing your default search provider.”
Respondent is seeking to gain access to the computers of unsuspecting Internet users. There is no evidence as to the nature of such “Secured Search extension” which Respondent purports to install on users’ computers, but as Respondent is using Complainant’s trademark to attract and misdirect such users, this Panel must infer that this message is disingenuous and that by requesting access to Internet users’ devices, Respondent is acting in bad faith.
The evidence additionally shows that at other times the disputed domain name resolves to a parked website offering the disputed domain name for sale. In the circumstances of this case, such passive use in itself would allow a finding of bad faith registration.
Most compelling however in these circumstances, is the evidence that Respondent has been the unsuccessful respondent in a large number of complainants under the Policy and is clearly engaged in a pattern of bad faith registration of domain names in which she has no rights or legitimate interests that are identical or confusingly similar to third party trademarks.
This Panel finds therefore that the disputed domain name was registered and is being use in bad faith.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pixcellabcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 12, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page